283 F.

3d 502

Lois B. MORRIS, Plaintiff-Appellant,

v.
BUSINESS CONCEPTS, INC., James J. Maher and Petra H.
Maher, Defendants-Appellees.
Docket No. 00-7509.

United States Court of Appeals, Second Circuit.

March 18, 2002.

David B. Wolf, New York, N.Y. (Cowan, DeBaets, Abrahams &

Sheppard, LLP, of counsel), for Plaintiff-Appellant.
Jeffrey A. Oppenheim, New York, N.Y. (Law Office of Jeffrey A.
Oppenheim, of counsel), for Defendants-Appellees.
Before OAKES, KEARSE and CABRANES, Circuit Judges.
OAKES, Senior Circuit Judge.

In response to the petition for rehearing, we write to clarify part of the

reasoning in our opinion. Because it might significantly affect some future case,
we wish to modify our opinion by removing Part I.

In saying that "an owner of a particular right as opposed to the copyright

itself would not be a copyright owner," Morris v. Business Concepts, Inc.,
259 F.3d 65, 69 (2d Cir.2001), we relied upon the great copyright treatise, 3
Melville B. Nimmer & David Nimmer, Nimmer on Copyright 10.02[C][2], at
10-28 (2000): [T]here is never more than a single copyright in a work,
notwithstanding the author's exclusive license of certain rights.

While Nimmer is supported by at least one other treatise, Boorstyn on

Copyright,1 others are not so clear or perhaps are even contrary.2

We recognize that the language of Section 101 itself, and of the Supreme Court
in the recent case New York Times Co., Inc. v. Tasini, 533 U.S. 483, 121 S.Ct.

2381, 150 L.Ed.2d 500 (2001), casts serious doubt upon the question whether
there may be only "a single copyright in a work." The statute, as pointed out in
footnote 2, supra, states that a "`[c]opyright owner,' with respect to any one of
the exclusive rights comprised in a copyright, refers to the owner of that
particular right."3 17 U.S.C. 101 (2001). And the Supreme Court, as part of
its approach to the collective work problem, said that "The 1976 Act rejected
the doctrine of indivisibility, recasting the copyright as a bundle of discrete
`exclusive rights,' 17 U.S.C. 106 (1994 ed. and Supp. V), each of which `may
be transferred ... and owned separately.' 201(d)(2)." Tasini, 121 S.Ct. at 238889 (footnote omitted).
5

But even if we could resolve the thorny problem of whether a single copyright
exists, we would still have to answer the question whether (assuming that both
the author and the exclusive licensee are copyright owners) a registration by
one can, for purposes of 411(a), cover the rights of the other. The statute
itself does not answer this question since it requires only that registration be
made "in accordance with this title," which includes other sections of the title
such as 408 and 409, as well as the Copyright Office's registration practices
and regulations.

Morris contends that the holding in Streetwise Maps, Inc. v. Vandam, Inc., 159
F.3d 739, 747 (2d Cir.1998), that the registration of a derivative work meets the
jurisdictional requirements of 411(a) in a suit for infringement of the original
work where the claimant owns the copyright in both, requires us to find that if
Cond Nast was a "copyright owner" of Morris's articles at the time it
registered the issues of Allure in which they appeared, then those articles are
registered for the purposes of 411(a). See Woods v. Universal City Studios,
Inc., 920 F.Supp. 62, 64 (S.D.N.Y.1996), cited in Streetwise Maps, 159 F.3d at
747. We disagree. In Streetwise Maps, the plaintiff apparently owned all of the
rights to the original work at the time it registered the copyright. See 159 F.3d
at 746-47. In this case, it is undisputed that Cond Nast owned only some of the
rights to Morris's articles at the time it registered the relevant issues of Allure.

The distinction between those constituent parts of a collective work in which

the author of the collective work owns all rights and those constituent parts in
which the author does not own all rights is critical in determining whether a
copyright registration in a collective work also registers a copyright claim in a
particular constituent work. As explained in the Circular for Copyright
Registration on Form SE, which concerns the form used by Cond Nast to
register the issues of Allure as serial publications:

The claimant registering a serial may claim copyright not only in the collective-

work authorship for which the claimant is responsible but also in any
independently authored contributions in which all rights have been transferred
to the claimant by the contributors.
9

If the serial issue includes any independently authored contributions in which

all the rights have not been transferred by the contributor to the claimant for the
serial issue as a whole, those contributions are not included in the claim being
registered, because the claimant in these contributions is different from the
claimant in the entire serial issue.

10

Copyright Office Circular No. 62 (Serials) (emphasis in original). This

language highlights that if all rights in a constituent work have not been
transferred to the claimant, a collective work registration will not apply to the
constituent work. If, on the other hand, all rights have been transferred to the
claimant, then the constituent work is included in the registration of the
collective work.

11

We recognize that "the Copyright Office has no authority to give opinions or

define legal terms, and [that] its interpretation on an issue never before decided
should not be given controlling weight," Bartok v. Boosey & Hawkes, Inc., 523
F.2d 941, 946-47 (2d Cir.1975) (footnotes omitted). In this case, however, we
find the Office's interpretation persuasive. Cf. United States v. Mead Corp., 533
U.S. 218, 121 S.Ct. 2164, 2175, 150 L.Ed.2d 292 (2001) (noting that even
where an agency's interpretation of law is not entitled to highly deferential
treatment pursuant to Chevron U.S.A. Inc. v. Natural Resources Defense
Council, Inc., 467 U.S. 837, 104 S.Ct. 2778, 81 L.Ed.2d 694 (1984), "an
agency's interpretation may merit some deference whatever its form, given the
`specialized experience and broader investigations and information' available to
the agency" (quoting Skidmore v. Swift & Co., 323 U.S. 134, 139, 65 S.Ct. 161,
89 L.Ed. 124 (1944))). Accordingly, we hold that unless the copyright owner of
a collective work also owns all the rights in a constituent part, a collective work
registration will not extend to a constituent part.

12

Although Tasini contains much language favorable to the authors of an article

included by a publisher in a collective work, see 121 S.Ct. at 2388-89, it is not
to the contrary. In Tasini, "The Authors registered copyrights in each of the
Articles. The ... Print Publishers ... registered collective work copyrights in
each periodical edition in which an Article originally appeared." Id. at 2385. In
our case, Morris did not register her copyright, though she could, of course,
have done so. The Copyright Office regulations permit:
as a general rule, only one registration per work. Under these regulations an

13

as a general rule, only one registration per work. Under these regulations an
exclusive transferee of a single 106 right, who qualifies as a "copyright
owner" under the 101 definition, will not be permitted to register a claim in
that single right. Based on both practical and legal considerations, these
regulations are designed "to make[] clear that the copyright `claimant' for
purposes of copyright registration is the author of the work for which
registration is sought or a person or organization that has obtained ownership of
all rights under the copyright initially belonging to the author." Interim
Regulation: Part 202-Registration of Claims to Copyright, 43 Fed. Reg. 965
(1978).

14

1 Patry at 360 n. 6.

15

We therefore conclude that regardless whether Conde Nast was a copyright

owner of Morris's articles, its registration of the collective works in which they
appeared do not satisfy 411(a)'s requirements with respect to Morris.

16

We have considered Morris's arguments with respect to Parts II and III of our
opinion, and find them to be unconvincing. We therefore deny the petition for
rehearing.

Notes:
1

"Despite the new concept of divisibility of copyright ownership, a distinction

must be made between ownership of copyright in the work itself and ownership
of the separate rights of copyright. There is only one copyright in a work and it
is not divisible; there are, however, different rights of copyright and they are
divisible." Neil Boorstyn,Boorstyn on Copyright, 3.08, at 3-33 to 34 (2000).
See also Paul Goldstein, Copyright, 4.4.1.1 at 409 ("Although the Copyright
Act makes copyright divisible into individual exclusive rights and gives the
holders of these rights the same protection that it gives to copyright owners
generally, the Act also presupposes that there will at any time be only one
copyright and one copyright owner.")

See 1 Howard B. Abrams, The Law of Copyright 4.05[A], 4-70 (2000)

("Section 201(d)(2) expressly makes the exclusive rights in a copyright
divisible and capable of separate ownership, thus laying to rest the clumsy and
antiquated doctrine of indivisibility that had plagued the 1909 Act.") & n. 186
("Prior to its unmourned demise, the doctrine met with constant criticism from
the commentators... and was often evaded or limited by the courts. See, e.g.,
Goodis v. United Artists Television, Inc., 425 F.2d 397 (2d Cir.1970).") See

also 1 William F. Patry, Copyright Law and Practice, 359-60 (1994):

The 1976 Act does not provide a definition of "copyright"; instead, the
exclusive rights granted in Sections 106 and 106A together comprise the
copyright. Initially, these rights vest, as a bundle, in the author. The author's
Section 106 rights may be transferred in a number of ways, including by
assignment, operation of law, bequest, and intestate succession. Each right or
portion of a right may be transferred separately. As long as the right transferred
is exclusive, the transferee is considered the "copyright owner" of that right and
may enforce it separately without the consent of the owner(s) of the other
rights. This principle, known as "divisibility," is established by the Act's
definition of "copyright owner": "Copyright owner," with respect to any one of
the exclusive rights comprised in a copyright, refers to the owner of that
particular right.
(Footnotes omitted).
3

We note that Nimmer, in 10.02[C][2] n. 58 at 10-30 to 31, relies upon counsel

for the Authors League of America to point out the statutory contrast between
101, which refers to a transfer of particular rights, and 201(d)(1), which refers
to a transfer of "[t]he ownership of copyright." He furthers notes that provisions
201(e), 202, and 203(a) all distinguish between the "ownership of copyright"
and ownership of "any of the exclusive rights under a copyright." Nimmer then
states: "Yet, `copyright owner' under the 101 definition may only be equated
with the owner of any of the exclusive rights under a copyright."